Susan Neuberger Weller

Susan Neuberger Weller is a Member based in our Washington, DC office whose practice focuses on IP, related transactions, and IP litigation. Susan specializes in trademark, copyright, domain name, trade dress, and related areas of Internet, e-commerce, unfair competition, customs, and advertising law. She has written and contributed to numerous IP books and has provided IP commentary for Court TV as well as the Wall Street Journal, New York Times, and other publications. Susan was named a DC Super Lawyer from 2006 to 2010, has been listed in multiple editions of the Guide to the World’s Leading Trade Mark Law Practitioners, and is rated AV Preeminent by Martindale-Hubbell.

The U.S. Supreme Court announced today that it will review whether the U.S. Trademark Office can deny registration of offensive trademarks or whether such prohibition violates the First Amendment. The dispute affects the constitutionality of Section 2(a) of the Lanham Act, which prohibits registration of such marks. The case originated in 2013 following the Office’s refusal to register THE SLANTS as a mark for an Oregon rock band on grounds that it was a derogatory slang phrase for people of Asian descent.

As the March Madness season kicks into full gear, organizations throughout the country will be seeking to capitalize upon the energy created by college basketball to host events and promotions. In doing so, however, it is important to remember that the phrase “March Madness” is a federally registered trademark owned by the NCAA. For full details on NCAA’s ownership of the trademark and how to avoid getting into a sticky situation regarding this phrase, please see our post on our Copyright & Trademark Matters blog.

On February 6, 2015, a US District Court issued a ruling which underscores the territorial nature of trademark rights and the need to seek formal protection for your marks where possible in all countries of interest. The US District Court for the Eastern District of Texas reversed the US Trademark Trial and Appeal Board’s ruling in Bayer Consumer Care AG v. Belmora LLC which held that the Paris Convention does not grant trademark rights that are protectable under certain Sections of the United States Trademark Statute (the Lanham Act). The District Court’s decision allows Belmora LLC’s US trademark registration for FLANAX to stand even though Bayer holds trademark protection for FLANAX for a very similar product. Bayer’s registration of FLANAX is in Mexico and its similar product in the US is marketed under the brand Aleve. Read more analysis of this important decision on the Copyright & Trademark Matters blog.

In order to qualify as a protected trademark, US based trademark registrations are required to prove both the use and a bona fide intent to use the mark before it can be protected. For non-US based registrations, under Sections 45(e) or 66(a) of the US Trademark Act, trademarks do not have to prove such use, and are instead only required demonstrate the intent to use the trademark.

Section 45 of the US Trademark Act, which states that trademarks can be found to be abandoned in situations where the use of a mark has been discontinued without an intent to resume such use, also allows that such intent to not resume use can be inferred circumstantially from a three year period of non-use. The question of when to determine the starting point of a period of non-use of a trademark for non-US based registrants under Section 44(e) was addressed in Imperial Tobacco Ltd v. Phillip Morris Inc., 899 F.2d 1575, 14 USPQ2d 1390 (Fed, Cir. 1990), yet it was not until recently in the Trademark Trial and Appeal Board’s decision in Dragon Bleu (SARL) v. VENM, LLC, Opposition No. 91212231 (TTAB December 1, 2014) that such a question could be definitively answered for non-US based trademark registrations falling under Section 66(a). Read more about this decision and its ramifications in an extended post on the Copyright & Trademark Matter blog.

For some businesses, the creative processes associated with product branding, image crafting, or any other endeavors requiring the use of labeling a trademark can be extremely arduous. A recent New York Times Magazine article by Neal Gabler entitled, “Call It What It Is” provides excellent advice regarding methods and ideologies that can be effective for creating new product brand names. Yet, arguably more important than settling on the perfect name is protecting that name. Read more about important first steps for protecting a trademark in an extended post on the Copyright & Trademark Matters blog.

What do sports fans, party-goers, third-party advertisers, and any non NFL affiliated businesses have in common? No legal right to use the words “SUPER BOWL” without the risk of trademark infringement! The National Football League is the owner of the federally registered trademark, Super Bowl, and in recent years has taken an aggressive position in enforcing its use to only those with an official licensing agreement. As the Super Bowl approaches, notice the increased frequency of advertisement references to variants such as, “The Big Game.” The NFL enjoys considerable legal backing of this trademark due to its long-standing use, registered status, and notoriety. Read more about the NFL’s exclusive “Super Bowl” trademark privileges and what this may mean for your Sunday evening plans in an extended post on the Copyright & Trademark Matters blog.

Senator Patrick Leahy has introduced a bill (Senate bill 23) that aims to address the transfer of a copyright to the author’s spouse or next of kin following the author’s death. There is also a corresponding bill (H.R. 238) in the House, introduced by Representative Derek Kilmer.

This is the first substantive trademark decision that the US Supreme Court has issued in a decade. Justice Sotomayor, writing for a unanimous Court, took on the issue of tacking and held that when the facts do not warrant entry of summary judgment or judgment as a matter of law on the question of tacking, the question of whether tacking is warranted must be decided by a jury.

This decision highlights the importance of trademark owners diligently maintaining their archival records in order to best defend against claims of infringement.

For more information on the case, please see the full blog post on our Copyright & Trademark Matters blog.

The US Government, seeking to defend he constitutionality of Section 2(1) of the Lanham Act, has now stepped into the Washington Redskins’ trademark issues. In early January, the US Department of Justice filed a Notice of Intervention in the appeal of the US Trademark Trial and Appeal Board’s 2014 decision to cancel the REDSKINS trademark registrations.

The Washington Redskins had raised a number of constitutional issues in their appeal, all of which are outlined in our Copyright & Trademark Matters blog post. Stay tuned for updates on this matter!

With the arrival of 2015, the US Trademark Office has recently announced a reduction in filing fees both for new trademark applications and registration renewal applications. Check out the full post, including dollar amount reductions at the Copyright & Trademark Matters blog.

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